Federal Circuit Overturns ITC Ruling to Give US Synthetic a Significant Victory

FOR IMMEDIATE RELEASE
February 20, 2025

WASHINGTON, DC—Finnegan secured a landmark precedential victory for its client US Synthetic Corp. (USS) after the U.S. Court of Appeals for the Federal Circuit overturned an unfavorable 35 U.S.C. § 101 eligibility ruling from the International Trade Commission (ITC).

The ITC initially ruled that USS’s patent, which pertains to a polycrystalline diamond compact used in rotary drill bits, was directed to an abstract idea, finding that the claimed magnetic properties were merely side effects rather than structural characteristics of the compound. In the merits phase, the ALJ found that claims 1, 2, 11, 15, and 21 of U.S. Patent No. 10,508,502 were infringed, not invalid under 35 U.S.C. §§ 102, 103, or 112, and supported by the economic prong of the domestic-industry requirement. USS appealed and noted that the case appeared to be the first time a composition of matter had been deemed an ineligible abstract idea.

In a precedential opinion, the Federal Circuit reversed the ITC’s ruling under § 101. The Court concluded that the claims are directed to a specific, non-abstract composition of matter and not an abstract idea. The court explained that material properties covered in the claims do not result in patent ineligibility, they instead define the structural characteristics of the claimed product.  The precedential decision remanded the case back to the ITC, where the asserted claims had already been found to have been infringed.

Finnegan partner Daniel Cooley said, “The Court’s precedential opinion resolves a novel and consequential question under § 101. By reversing the ITC’s §101 ruling, the Court cleared the path to final relief.”